Alpha One Foundation, Inc. v. Alexander Morozov
Claim Number: FA0608000766380
Complainant is Alpha One Foundation, Inc. (“Complainant”), represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA 22314. Respondent is Alexander Morozov (“Respondent”), 555 8-th Ave #1001, New York, NY 10018.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shortofbreathgettested.org>, registered with Network Solutions LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2006.
On August 2, 2006, Network Solutions LLC confirmed by e-mail to the National Arbitration Forum that the <shortofbreathgettested.org> domain name is registered with Network Solutions LLC and that Respondent is the current registrant of the name. Network Solutions LLC has verified that Respondent is bound by the Network Solutions LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@shortofbreathgettested.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shortofbreathgettested.org> domain name is identical to Complainant’s SHORTOFBREATHGETTESTED.ORG mark.
2. Respondent does not have any rights or legitimate interests in the <shortofbreathgettested.org> domain name.
3. Respondent registered and used the <shortofbreathgettested.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alpha One Foundation, Inc., is a not-for-profit Florida corporation that seeks to educate the public regarding Alpha-1, a debilitating genetic disorder that causes liver and lung disease. In connection with its ongoing educational campaign, Complainant registered the <shortofbreathgettested.org> domain name on April 19, 2004. On July 19, 2004, Complainant pointed the disputed domain name to its newly created website that offered informational materials regarding Alpha-1. Complainant, since the launch of its informational website, has undertaken considerable promotional efforts that incorporate the SHORTOFBREATHGETTESTED.ORG service mark. These efforts include, but are not limited to, the inclusion of the mark within Complainant’s logo, promotional flyers and advertisements, and in numerous presentation slideshows. The disputed domain name was mistakenly allowed to expire.
On May 26, 2006, Respondent registered the <shortofbreathgettested.org> domain name shortly after it expired. Since registration, Respondent has used the disputed domain name to redirect Internet users to a website that displays sexually explicit material.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant, through its continuous and extensive use of the SHORTOFBREATHGETTESTED.ORG mark in connection with the promotion of its informational website, has established sufficient secondary meaning and consumer goodwill in the mark to establish common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).
Complainant contends that the <shortofbreathgettested.org> domain name is identical to its common law SHORTOFBREATHGETTESTED.ORG mark. The disputed domain name contains Complainant’s mark in its entirety, without any variation whatsoever. Accordingly, the Panel finds the disputed domain name to be identical to Complainant’s SHORTOFBREATHGETTESTED.ORG mark. See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes such a showing, the burden shifts to Respondent to affirmatively show that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant, through its uncontested assertions and evidentiary submissions in its Complaint has successfully made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name.
Due to Respondent’s failure to submit a Response in this proceeding, the Panel reasonably infers that Respondent does not have rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel, however, will analyze the evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
According to the WHOIS registry, the registrant of the
disputed domain name is “Alexander Morozov.”
This fact, combined with the lack of evidence in the record to suggest
otherwise, allows the Panel to rule that Respondent is not commonly known by
the disputed domain name or any variation thereof pursuant to Policy ¶
4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Furthermore, the disputed domain name redirects Internet users to a website that features sexually explicit content. The use of a domain name that is identical to Complainant’s common law mark to divert unsuspecting Internet users to a website that contains sexually explicit materials, presumably for commercial gain, does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitmate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent has registered
and used the disputed domain name in bad faith after Complainant inadvertently
allowed the disputed domain name to expire.
Due to the nature of the sexually explicit website that the disputed
domain name redirects Internet users to, the Panel may reasonable infer that
Respondent is receiving commercial gain from the operation of such a
website. Additionally, because the
disputed domain name is identical to Complainant’s common law mark, it is
likely that consumer confusion regarding Complainant’s sponsorship of or
affiliation with the resulting pornographic website will ensue. In accordance with the foregoing, the Panel
finds that Respondent has registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to adult
oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to commercially
benefit from the misleading domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv).”); Mars, Inc. v.
Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith
under Policy ¶ 4(b)(iv) where the respondent linked the domain name
<marssmusic.com>, which is identical to the complainant’s mark, to a
gambling website).
Moreover, highlighting the fact that Respondent opportunistically registered the disputed domain name upon its expiration and pointed it to a website that contains sexually explicit content, the Panel finds that Respondent registered and used the disputed domain name in bad faith generally pursuant to Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shortofbreathgettested.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 20, 2006
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